CHEMETRICS, INC. v. Robert Richardson
Claim Number: FA1802001770523
Complainant is CHEMETRICS, INC. (“Complainant”), represented by Timothy R. Kroboth of Kroboth Law Office, North Carolina, USA. Respondent is Robert Richardson (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chemetrics.xyz> and <chemetrics.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2018; the Forum received payment on February 5, 2018.
On February 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chemetrics.xyz> and <chemetrics.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chemetrics.xyz, postmaster@chemetrics.org. Also on February 7, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, CHEMETRICS, INC., uses its CHEMETRICS mark to promote its products and services in the agricultural, cosmetics, plant products, food and beverage, food packaging, water treatment, drinking water analysis, waste water analysis, environmental monitoring, power generation, petrochemical, petroleum refining, pharmaceutical, pulp and paper, science education, lab/clinical, transportation and mining industries.
Complainant established rights in the CHEMETRICS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,509,716, registered Oct. 25, 1988), and otherwise.
Respondent’s <chemetrics.xyz> and <chemetrics.org> domain names are identical or confusingly similar to Complainant’s CHEMETRICS mark as each merely appends a generic top-level domain (“gTLD”) to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <chemetrics.xyz> and <chemetrics.org> domain names. Complainant has not licensed or otherwise authorized Respondent to use its CHEMETRICS mark in any fashion. Respondent is not commonly known by the disputed domain names. Further, Respondent failed to use the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered and is using the domain names in bad faith. Respondent displays a pattern of bad faith registration. Respondent failed to use the domain names in connection with an active website. Lastly, Respondent registered the domain names with actual knowledge of Complainant’s rights in the CHEMETRICS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CHEMETRICS mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the CHEMETRICS mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent holds the <chemetrics.xyz> and <chemetrics.org> domain names inactively.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the CHEMETRICS trademark evidences its rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, each at-issue domain name contains Complainant’s entire CHEMETRICS trademark followed by either the top-level domain name “.xyz” or “.org”. The minor differences between each at-issue domain name, <chemetrics.xyz> and <chemetrics.org>, and Complainant’s CHEMETRICS trademark are insufficient to distinguish either domain name from the Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <chemetrics.xyz> and <chemetrics.org> domain names are each identical to Complainant’s CHEMETRICS trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name.
WHOIS information for the at-issue domain names identifies each domain name’s registrant as “Private Registrant, Domains By Proxy, LLC.” Robert Richardson is believed to be the party actually in control of the at-issue domain names. The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <chemetrics.xyz> domain name or the <chemetrics.org> domain name. The Panel therefore concludes that Respondent is not commonly known by either domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent holds both at-issue domain names inactively. Failing to make any use of a domain name constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <chemetrics.xyz> and <chemetrics.org> domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each domain name, pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant shows that Respondent has been involved in prior adverse UDRP decisions including but not limited to CHEMETRICS, INC., v. Robert Richardson, FA1708001746051 (Forum Sept. 29, 2017), where Respondent is believed to have registered the domain names, <chemetrics.net> and <chemetrics.biz>. Respondent likewise registered multiple domain names that contain Complainant’s CHEMETRICS trademark regarding the instant dispute. The foregoing circumstances indicate a pattern of bad faith domain name registration and use, and suggest Respondent’s present bad faith pursuant to Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”).
Next, Respondent’s failure to make any active use of either <chemetrics.xyz> or <chemetrics.org> indicates Respondent’s bad faith registration and use of such domain names. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also, VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent registered <chemetrics.xyz> and <chemetrics.org> knowing that Complainant had trademark rights in the CHEMETRICS trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s prior registration of multiple domain names containing Complainant’s CHEMETRICS trademark, and from Complainant’s unchallenged assertion that Respondent communicated with Complainant about the CHEMETRICS product line praising it as a “wonderful product line.” It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <chemetrics.xyz> and <chemetrics.org> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chemetrics.xyz> and <chemetrics.org> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 5, 2018
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